Goods aiming to prevent, diagnose, treat, cure COVID-19 may receive priority in examination order
The Canadian Intellectual Property Office has started accepting requests for expedited examination of trademark applications for COVID-19-related medical goods or services, effective Dec. 14, 2020, in the interest of providing Canadians with timely access to these offerings amid the pandemic.
A post written by Philip Lapin, partner at Smart & Biggar LLP, pointed out that this is the first time in over a decade that requests for expedited examination of trademark applications were permitted. “This is a notable change in practice, since there is currently a significant backlog facing trademark applications in Canada, with delays in examination of about 2 years from filing,” wrote Lapin.
“The pilot initiative, while quite limited in its scope, is welcome news to applicants with trademarks covering time-sensitive COVID-19-related goods and services, since examination is currently taking upwards of 24 months,” wrote Jennifer McKenzie, partner at Bereskin & Parr LLP, in a post. McKenzie noted that this initiative will last until Aug. 31, or until such time that the registrar of trademarks deems appropriate.
Generally, CIPO examines trademark applications according to the order of receipt by the registrar and declines to grant requests to expedite the examination of specific applications because both the Trademarks Act and the Trademarks Regulations lack specific provisions which would allow CIPO to grant a favoured position to a particular applicant at the expense of others. This rule is, however, being relaxed in the context of the public health crisis.
The request for expedited examination should relate to applications for goods or services aiming to prevent, diagnose, treat or cure COVID-19, specifically pharmaceuticals, medical devices like diagnostic tests and ventilators, or medical protective equipment like sanitary masks protecting against viral infections and disposable gloves for medical purposes. The request may also relate to medical services or medical research services seeking to prevent, diagnose, treat or cure COVID-19.
The request should take the form of an affidavit or statutory declaration by a person knowing the facts and setting out the specific circumstances and reasons for the request. The request should state that it complies with at least one of the following criteria: a court action is ongoing in Canada relating to the applicant’s trademark in association with the goods or services identified in the application, or the applicant is currently combating counterfeit products at the Canadian border relating to such trademark, or the applicant has submitted or received a positive response for an approval from Health Canada for the use of such goods or services.
The request, which needs no extra fee for the expedited examination, should mention the applicant’s name and, if known, the trademark application number, should relate to only one trademark application and should be filed via mail or fax.
If the request is accepted, CIPO will examine as soon as possible whether the application complies with the requirements under the Trademarks Act and the Trademarks Regulations and the guidance from the Trademarks Examination Manual. Applications receiving expedited examination may lose their advantage if the applicant seeks an extension of time or misses a deadline. If the request is rejected, CIPO will provide the applicant with written reasons for such denial.
The Federal Court, which hears appeals from CIPO decisions, also announced in a practice direction dated Jan. 18 that it is suspending in-person hearings in Ontario and Quebec until Feb. 12, subject to certain exceptions, such as designated (national security) proceedings or the presence of exceptional circumstances as determined on a case-by-case basis. In those provinces, the court will conduct regular operations via video conference, teleconference and in writing.
The Federal Court’s operations in other provinces and territories have not changed, except with respect to the deployment of drop boxes for paper document filings.